Trademarks in Israel - Q&A
What is a trademark?
A trademark is defined in the Trademark Ordinance as a mark which serves a person in connection with the goods in which he trades. Trademarks can be letters, numbers, words, images, other kinds of signs or any combination of the above, and may appear as two or three dimensional.
What is a service mark?
A service mark is a sub-group of trademarks in connection with services instead of goods. Anything explained in this page in connection with trademarks is applicable also to service marks.
What are the threshold requirements for registering a trademark in Israel?
The basic requirement for registering a trademark is that the mark is distinctive in a manner sufficient to distinguish it from trademarks of third parties. The Israeli Trademark Ordinance defines many categories of marks which cannot be registered, such as marks which are identical or confusingly similar to trademarks of third parties in the same class of goods, or in a different class of goods when the third party mark is a famous trademark. For example, owners of famous trademarks such as Coca Cola are entitled to prevent others from registering these trademarks in respect of different classes of goods.
How do I file a trademark application in Israel?
A trademark application is filed to the Trademark Office in respect of the goods for which protection is sought. There are 45 classes of goods or services and a separate application should be filed in respect of each class. When the application is being examined by the Trademark Office the Trademark Registrar can object to the registration of the mark. In case the application is accepted at a certain stage of the examination, the application is published in the Trademark Gazzette for three months, during which third parties may file an opposition. If no opposition is filed, the mark is registered.
Is a non-registered trademark entitled to any kind of protection in Israel?
Basically yes, although the level of protection may be lower than in the case of a registered trademark. An owner of an unregistered trademark may sue third parties who use it for passing off (as defined in the Commercial Wrongs Act), provided that he meets the requirements to do it: the mark has acquired goodwill and the use by third parties raises likelihood of confusion. In such case, the onus to prove goodwill acquired by the mark lies on the claimant while if the mark is registered, the claimant does not have to meet such burden of proof. Also, in the even that the mark is a famous trademark (something which the claimant has to prove), it is entitled to wider protection even if the mark is not registered. In some cases, the owner of an unregistered trademark may also sue third party infringers for unjust enrichment, based on the famous judgment of the Israeli Supreme Court in the A.Sh.I.R. case. However, this issue is far more complicated and requires a delicate analysis of the circumstances of each case.
What is a famous trademark?
A famous trademark (as defined in the Trademark Ordinance as a "well known trademark") is a mark which is well known in the relevant sector of the public as a result of extensive marketing. Only a "strong" mark which enjoys extensive goodwill shall be entitled to enjoy the wide scope of protection which a famous trademark enjoys. There are several criteria which are examined in connection with the strength of the mark, including scope of marketing and advertising of products or services bearing the mark. A famous trademark enjoys a wide scope of protection also against use in respect of a different class of goods. Thus, for example, in the first judgment of the Israeli Supreme Court on this issue it was ruled that the proprietors of the alcoholic beverage Bacardi are entitled to prevent the registration of the mark Bacardi in respect of clothes. The Bacardi judgment was given before the doctrine of famous trademark was legislated in Israel but today this issue is properly defined in the Israeli legislation.
Is it possible to challenge the validity of a registered trademark?
Yes. It is possible to file a motion for cancellation of a trademark on the grounds that it did not meet the requirements for trademark registration. The motion can be filed within 5 years from the date of registration (unless the motion is based on the contention that the applicant filed the application with bad faith, then there is no limit on the period in which it is possible to file a motion for cancellation).
What is the value of the trademark with respect to the internet?
Trademark laws apply in the internet. Thus, for instance, it is prohibited to register a domain name by using a third party trademark. See the section about information technology law on the website.
How do I enforce my trademark rights?
A trademark proprietor who believes that his rights have been infringed may file a civil claim in court against the infringer. Such a claim will usually be adjudicated in the District Court and in many cases shall be accompanied by a motion for preliminary remedies, in order to bring an immediate end to the infringing activities. A claim for trademark infringement will usually be based also on additional grounds, including passing off. In respect of this cause of action, Israeli law provides in the Commercial Wrongs Act statutory damages, without the need to prove actual damages, at the amount of up to NIS 100,000. In addition to the civil route, the Trademark Ordinance and the Goods Marks Ordinance provide that several aspects of trademark infringement also constitute a criminal offense. Thus, it is possible to approach the law enforcement authorities, by filing a complaint to the Israeli police, and ask them to bring criminal charges against the infringer.